Orange you using this trade-mark?

June 16th, 2014

Scotiabank acquired ING Bank of Canada in 2012, and in November of 2013, applied for a trade-mark for a new name for the banking subsidiary, TANGERINE. The name is fresh and allows the continued use of the bright orange formerly known to dominate ING banking advertisements. The marketing department in Scotiabank probably had an orange-themed party… until they received a letter of demand from Tangerine Financial Projects LP, alleging that it was entitled to the trade-mark. Tangerine Financial Products LP sold retirement planning, RRSPs, and financial advice, all products similarly offered by Scotiabank. The owners of Tangerine Financial Projects LP, RSP Generation LP (“RSP”) alleged the use of the name TANGERINE back as early as October 2008.

You will recall that Canada and the US are “first to use” jurisdictions, meaning that it is not a land rush to the Trade-mark Office in order to gain first priority. The person or entity which uses a particular trade-mark first in commerce gains the right to apply for that particular trade-mark (if they want to wait) and has the further right to challenge and oppose anyone who attempts to register an exact or similar trade-mark to the trade-mark they currently use. However, a successful opposition requires proof of use and other information, and can be quite costly to prepare and file. It is therefore recommended to register your own trade-mark early to give the disadvantage to anyone else who might try to oppose you.

In the present case, the facts are very unclear. While RSP may have used the TANGERINE name in its partnership registration, it soon thereafter went into bankruptcy and very likely did not continue to use the name (if at all). RSP did apply for a trade-mark for TANGERINE, but failed to sign the declaration of use to conclude the trade-mark registration, which can only be signed once the trade-mark is in use in commerce. This leads one to believe it failed to use the trade-mark else it would have signed the declaration. It is unclear whether RSP had used the trade-mark at all, and to what extent.

Based upon the current facts from various news sources, I find it difficult to believe that RSP will produce the necessary evidence. I believe it more likely that Scotiabank will buy out RSP’s interests and settle.

It is important that an owner of a trade-mark (1) use its trade-marks consistently, (2) register for a trade-mark, and (3) keep records of all advertising, sales, and trade-mark displays. You never know when you might need to present it at court.